Ex parte Miyazaki

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte KENICHI MIYAZAKI
____________
Appeal 2007-3300
Application 09/386,000
Technology Center 3600
____________
Decided: November 19, 2008
____________
Before MICHAEL R. FLEMING, Chief Administrative Patent Judge,
ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E. HORNER,
Administrative Patent Judges.
HORNER, Administrative Patent Judge.
DECISION ON APPEAL

Appeal No. 2007-3300
Appl. No. 09/386,000
2
STATEMENT OF THE CASE
Kenichi Miyazaki (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-6, 13, 15-18, 26, and 31, which are all of
the pending claims. We have jurisdiction under 35 U.S.C. § 6(b) (2002).
The Invention
The Appellant’s claimed invention is to a large printer that employs
roll paper (Spec. 1:5-6). Claims 1, 13, 15, and 26 reproduced below, are
representative of the subject matter on appeal.
1. 	A large printer comprising:
a paper feeding unit operable to feed at least
one roll of paper, at least one substantially flat
sheet of paper and at least one stiff carton, the
paper feeding unit being located at a height that
enables a user, who is approximately 170 cm tall,
standing in front of the printer to execute the paper
feeding process including replacement of the roll
paper and setting at least one of the sheet of paper
and the stiff carton;
a printing unit located below the paper
feeding unit,
a discharged paper stacking unit located
below the printing unit; and
a paper feeding path extending in a
substantially straight line from the paper feeding
unit to the discharged paper stacking unit via the
printing unit.

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13. 	A large printer comprising:
a sheet feeding area positioned at a height at
which a user, who is approximately 170 cm tall,
can set up a printing medium without having to
bend substantially at the waist when the user is
standing erect in front of the printer and standing
substantially at ground level,
wherein the sheet feeding area is positioned
at the height when the printer is placed
substantially at the ground level.
15. 	A large printer comprising:
a sheet feeding area operable to feed at least
one roll of paper, at least one sheet of paper and at
least one stiff carton toward a printing unit at
which printing is performed thereon; and
a cover member, which covers a first
feeding path for the roll of paper from above, and
which supports at least one of the sheet of paper
and the stiff carton from below to constitute a part
of a second feeding path for the sheet of paper,
wherein the cover member extends linearly
from an upstream portion thereof to a downstream
portion thereof in connection with a direction in
which at least one of the sheet of paper and the
stiff carton is fed at the sheet feeding area, and
wherein the cover member is disposed
between at least one of the sheet of paper and the
stiff carton and the roll of paper at a location in the
sheet feeding area at which the roll of paper is in a
rolled shape.

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26. 	A large printer comprising:
a sheet feeding area operable to feed a
plurality of paper rolls ranging in width from
210 mm to 1120 mm, a substantially flat sheet of
paper ranging in length from 420 mm to 1580 mm
and at least one stiff carton ranging in length from
420 mm to 730 mm.
The Rejections
The Examiner relies upon the following as evidence of
unpatentability:
McCulley 	US 938,885 	Nov. 2, 1909
Smedal 	US 1,128,730 	Feb. 16, 1915
Hageman 	US 2,300,276 	Oct. 27, 1942
Metzner 	US 2,904,332 	Sep. 15, 1959
Yamada 	US 5,838,354 	Nov. 17, 1998
Takumi 	JP 63-154558 	Jun. 27, 1988
Orbons 	EP 0 727 375 A1 	Aug. 21, 1996
Brochure entitled, AO Size Oily Color Ink-Jet Plotter IP-4000, Seiko
Instrument, Inc. (Jun. 1997) (hereinafter “IP-4000 device”).
MicroStation Manager Web page posted at
http://archive.msmonline.com/1997/12/products.html, offering the
OCE 9400 device for sale, pp. 1-7 (Dec. 1997) (hereinafter “MSM
On-Line printout”).
Web page posted at http://www.digital-es.com/o9400.htm, showing
specifications for the OCE 9400 device (Jul. 2004) (hereinafter
“Digital ES publication”).
The following Examiner’s rejections are before us for review:
1. Claims 1-6, 13, and 16-18 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and

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distinctly claim the subject matter which applicant regards as the
invention.
2. Claims 1, 5, 6, 16, 26, and 31 are rejected under 35 U.S.C. § 102(e) as
being anticipated by Yamada.
3. Claims 13, 18, 26, and 31 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Orbons.
4. Claims 13, 17, 18, 26, and 31 are rejected under 35 U.S.C. § 102(b) as
being anticipated by the IP-4000 device.
5. Claims 1, 3, 5, 6, 13, 17, 18, 26, and 31 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by the OCE 9400 device, as described in
the MSM On-Line printout and the Digital ES publication.
6. Claims 16, 26, and 31 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Takumi.
7. Claim 2 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Yamada and Orbons.
8. Claims 13 and 17 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over McCulley and Smedal.
9. Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hageman and Metzner.
SUMMARY OF DECISION
We AFFIRM-IN-PART and ENTER NEW GROUNDS OF
REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R.
§ 41.50(b).

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ISSUES
The Examiner rejected claims 1-6, 13, and 16-18 because the
recitations in the claims relating the height of the paper feeding unit and the
sheet feeding area to a user’s height are unclear (Ans. 3-4). The Appellant
contends that the claims are sufficiently definite in that “to ascertain whether
a large printer is infringing [claim 1], one need ascertain, inter alia, whether
the large printer has a paper feeding unit that is located at a height that
would allow a user, who is approximately 170 cm tall and standing in front
of the large printer, to execute a paper feeding process” (App. Br. 15). One
issue before us is whether the Appellant has shown that the Examiner erred
in concluding that the language of claims 1-6, 13, and 16-18 is indefinite
because the manner in which the claims recite the height of the paper
feeding unit and/or the sheet feeding area in relation to a user’s height is
ambiguous when the claims are read in light of the Specification.
The wording of the claims also raises two additional issues that we
address in new grounds of rejection. The first issue is whether the recitation
of a “sheet feeding area” in claims 13, 15, 16, 18, and 26 is sufficiently
definite such that those skilled in the art would understand what is being
claimed when the claims are read in light of the Specification. A second
issue before us is whether the recitation of a “sheet feeding area operable to
feed …” in claims 15 and 26 is a purely functional recitation with no
limitation of structure.

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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. 	Claim 1 recites “the paper feeding unit being located at a height
that enables a user, who is approximately 170 cm tall, standing in
front of the printer to execute the paper feeding process including
replacement of the roll paper and setting at least one of the sheet of
paper and the stiff carton.”
2. 	The Appellant’s Specification does not clearly impose a structural
limitation on the height of the paper feeding unit of the claimed
printer. The Specification describes the height of the paper feeding
unit using the same language as used in claim 1, and does not
describe a positional relationship between the user and the printer
(see e.g., Spec. 3:8-11 and 14:13-16).
3. 	Figure 1 of Appellant’s Specification shows only a preferred
embodiment in which both the user and the printer are at ground
level. The Appellant’s Specification describes that Figure 1 is “a
schematic vertical section view showing a state wherein a user
replaces a paper roll for a large printer according to the present
invention” and that the figures show a “preferred embodiment”
(Spec. 8:24-25 and 9:16-17). We interpret this description of
Figure 1 to mean that the positional relationship between the user

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and printer shown in the figure is only one of many possible states
in which a user can replace a paper roll in the printer.
4. 	Each of independent claims 3 and 4 recites “the paper feeding unit
being located at a height that enables a user standing in front of the
printer to execute the paper feeding process including replacement
of the roll paper and setting at least one of the sheet of paper and
the stiff carton.”
5. 	Each of independent claims 16 and 18 recites “a sheet feeding area
positioned at a height at which a user, who is approximately 170
cm tall, standing in front of the printer can set up a printing
medium without having to bend substantially at the waist, wherein
the sheet feeding area is positioned at the height when the printer is
placed substantially at ground level.”
6. 	Independent claim 13 recites “a sheet feeding area positioned at a
height at which a user, who is approximately 170 cm tall, can set
up a printing medium without having to bend substantially at the
waist when the user is standing erect in front of the printer and
standing substantially at ground level, wherein the sheet feeding
area is positioned at the height when the printer is placed
substantially at the ground level.” Claim 13 recites that both the
user and the printer are “substantially at ground level.”

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PRINCIPLES OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
ANALYSIS
Rejection of claims 1-6, 13, and 16-18 under 35 U.S.C. § 112, second
paragraph
The Federal Circuit has held in post-issuance patent infringement
cases that the definiteness requirement “does not compel absolute clarity”
and “[o]nly claims ‘not amenable to construction’ or ‘insolubly ambiguous’
are indefinite” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1347 (Fed. Cir. 2005) (citations omitted). See also StarScientific, Inc. v. R.J.
Reynolds Tobacco Co., Appeal No. 07-1448, slip. op. at 22 (Fed. Cir.
August 25, 2008) (“A claim term is not indefinite just because ‘it poses a
difficult issue of claim construction,’”) (quoting Exxon Research & Eng’g
Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)). The Federal
Circuit has noted that such a high standard of ambiguity for finding
indefiniteness is due to the statutory presumption of patent validity. Exxon
Research, 265 F.3d at 1375 (“By finding claims indefinite only if reasonable
efforts at claim construction prove futile, we accord respect to the statutory

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presumption of patent validity.”) See also Modine Mfg. Co. v. U.S. Int’l
Trade Comm’n, 75 F.3d 1545, 1557 (Fed. Cir. 1996) (rejecting
indefiniteness argument after construing claims; stating that “when claims
are amenable to more than one construction, they should when reasonably
possible be interpreted to preserve their validity”); and Athletic Alternatives,
Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996) (court chose
the narrower of two equally plausible claim constructions in order to avoid
invalidating the claims).
This rule of reading claims narrowly in view of ambiguity runs
counter to the USPTO’s broader standard for claim construction during
prosecution. In particular, unlike in post-issuance claim construction, the
USPTO gives pending claims “their broadest reasonable interpretation
consistent with the specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). This broader claim
construction standard is justified because, during prosecution, the applicant
has the opportunity to amend the claims, and the Federal Circuit has held
that an applicant has the opportunity and the obligation to define his or her
invention precisely during proceedings before the USPTO. See In re Morris,
127 F.3d 1048, 1056-57 (Fed. Cir. 1997) (35 U.S.C. 112, second paragraph,
places the burden of precise claim drafting on the applicant); In re Zletz, 893
F.2d 319, 322 (Fed. Cir. 1989) (manner of claim interpretation that is used
by courts in litigation is not the manner of claim interpretation that is
applicable during prosecution of a pending application before the USPTO).

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As set forth in the MPEP:
USPTO personnel are to give claims their broadest
reasonable interpretation in light of the supporting
disclosure. In re Morris, 127 F.3d 1048, 1054-55
(Fed. Cir. 1997). Limitations appearing in the
specification but not recited in the claim should not
be read into the claim. E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003)
(claims must be interpreted “in view of the
specification” without importing limitations from
the specification into the claims unnecessarily). In
re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969).
See also In re Zletz, 893 F.2d 319, 321-22 (Fed.
Cir. 1989) (“During patent examination the
pending claims must be interpreted as broadly as
their terms reasonably allow.... The reason is
simply that during patent prosecution when claims
can be amended, ambiguities should
be recognized, scope and breadth of language
explored, and clarification imposed.... An essential
purpose of patent examination is to fashion claims
that are precise, clear, correct, and unambiguous.
Only in this way can uncertainties of claim scope
be removed, as much as possible, during the
administrative process.”).
MPEP § 2106 (II) (Parallel citations omitted). As such, we employ a lower
threshold of ambiguity when reviewing a pending claim for indefiniteness
than those used by post-issuance reviewing courts. In particular, rather than
requiring that the claims are insolubly ambiguous, we hold that if a claim is
amenable to two or more plausible claim constructions, the USPTO is
justified in requiring the applicant to more precisely define the metes and
bounds of the claimed invention by holding the claim unpatentable under

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35 U.S.C. § 112, second paragraph, as indefinite.
The USPTO, as the sole agency vested with the authority to grant
exclusionary rights to inventors for patentable inventions, has a duty to
guard the public against patents of ambiguous and vague scope. Such
patents exact a cost on society due to their ambiguity that is not
commensurate with the benefit that the public gains from disclosure of the
invention. The USPTO is justified in using a lower threshold showing of
ambiguity to support a finding of indefiniteness under 35 U.S.C. § 112,
second paragraph, because the applicant has an opportunity and a duty to
amend the claims during prosecution to more clearly and precisely define the
metes and bounds of the claimed invention and to more clearly and precisely
put the public on notice of the scope of the patent.
As the Federal Circuit recently stated in Halliburton Energy Servs.:
When a claim limitation is defined in purely functional
terms, the task of determining whether that limitation is
sufficiently definite is a difficult one that is highly dependent
on context (e.g., the disclosure in the specification and the
knowledge of a person of ordinary skill in the relevant art area).
We note that the patent drafter is in the best position to resolve
the ambiguity in the patent claims, and it is highly desirable
that patent examiners demand that applicants do so in
appropriate circumstances so that the patent can be amended
during prosecution rather than attempting to resolve the
ambiguity in litigation.
Halliburton Energy Servs. v. M-ILLC 514 F.3d 1244, 1255 (Fed. Cir. 2008)
(emphasis added).

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Also, the requirement that the applicant clearly and precisely set out
the metes and bounds of the claimed invention prior to completion of
examination of the patentability of the claims furthers the USPTO’s duty to
issue valid patents. A fundamental principle of patent law is that the claims
measure the invention. United Carbon Co. v. Binney & Smith Co., 317 U.S.
228, 232 (1942). The duty of the PTO is to issue valid claims upon whose
language the public can rely. See Keystone Bridge Co. v. Phoenix Iron Co.,
95 U.S. 274, 278 (1877) (“[In the Patent Office, applicant's] claim is, or is
supposed to be, examined, scrutinized, limited, and made to conform to what
he is entitled to.”); Burns v. Meyer, 100 U.S. 671, 672 (1880); Graham v.
John Deere Co. , 383 U.S. 1, 18 (1966) (“[T]he primary responsibility for
sifting out unpatentable material lies in the Patent Office. To await litigation
is--for all practical purposes--to debilitate the patent system.”).
We realize that our reviewing court has never before set forth a
different standard of review for indefiniteness under 35 U.S.C. § 112, second
paragraph, for pre-issuance pending claims as compared with post-issuance
patented claims. The Federal Circuit has, however, noted that a different
standard for indefiniteness may be appropriate during prosecution of patent
claims. See Exxon Research and Engineering Co. v. U.S., 265 F.3d 1371,
1384 (Fed. Cir. 2001) (“If this case were before an examiner, the examiner
might well be justified in demanding that the applicant more clearly define
UL , and thereby remove any degree of ambiguity. However, we are faced
with an issued patent that enjoys a presumption of validity.”) Accordingly,
we adopt this lower threshold standard of ambiguity for indefiniteness for

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claims during prosecution in keeping with the USPTO’s broadest reasonable
interpretation standard for claim construction.
The language of claim 1 attempts to claim the height of the paper
feeding unit in relation to a user of a specific height who is performing
operations on the printer (Fact 1). Claim 1 fails to specify, however, a
positional relationship of the user and the printer to each other. For
example, claim 1 does not recite where the printer is located or where,
relative to the ground, the user is standing. As such, the printer of claim 1
could be positioned on a table or a platform and/or the user could be
standing on something other than the ground, such as a step stool. An
infinite number of combinations of printer and user positions could be
envisioned such that the above-recited language of claim 1 does not, in fact,
impose a structural limitation on the height of the paper feeding unit of the
claimed printer. As a result, claim 1 fails to delineate any height
requirement for the paper feeding unit despite purporting to do so. The
Appellant’s Specification also does not clearly impose such a positional
relationship between the user and the printer to the language of claim 1
(Fact 2). We decline to read the preferred embodiment depicted in Figure 1
into the claim, because the claim language is broader than the embodiment,
and the preferred embodiment implies that other embodiments may satisfy
the claim (Fact 4). See Superguide Corp. v. DirecTV Enterprises, Inc., 358
F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim language
may be aided by the explanations contained in the written description, it is
important not to import into a claim limitations that are not a part of the

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claim. For example, a particular embodiment appearing in the written
description may not be read into a claim when the claim language is broader
than the embodiment.”)
The Appellant argues that the height limitation at issue in claim 1 is
analogous to the limitation of claim 1 at issue in Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986). Claim 1 in
Orthokinetics related to a wheel chair and recited that the front leg portion of
the chair “is so dimensioned as to be insertable through the space between
the doorframe of an automobile and one of the seats thereof.” Id. at 1568.
The Federal Circuit held the “so dimensioned” limitation is definite under 35
U.S.C. § 112, second paragraph, and noted that the claims require “that one
desiring to build and use a travel chair must measure the space between the
selected automobile’s doorframe and its seat and then dimension the front
legs of the travel chair so they will fit in that particular space in that
particular automobile.” Id. at 1576. The court noted the fact that “a
particular chair on which the claims read may fit within some automobiles
and not others is of no moment.” Id. The Appellant argues that the present
claim 1, similar to the claim in Orthokinetics, permissibly “defines the
dimension or height of the paper feeding unit of the printer by referring to
something (i.e., a user), which is external to the printer” (Reply Br. 7). The
difference between the claim in Orthokinetics and the claims before us is
that the claim in Orthokinetics defined the dimension of the front leg of the
wheel chair by reference to a well defined reference area (i.e., the space
between the doorframe and seat of an automobile). In the present claims,

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because the relative position of the user and the printer are not well-defined
in the claim, the claimed height of the paper feeding unit does not present a
structural limitation on the height at all.
Accordingly, we agree with the Examiner that the language of claim 1
is not sufficiently definite such that those skilled in the art would understand
what is being claimed when the claim is read in light of the Specification.
Likewise, claims 2, 5, and 6 fail to define a positional relationship between
the user and the printer and thus are also indefinite by virtue of their
dependency from claim 1.
Each of independent claims 3, 4, 16, and 18 fails to recite any
positional relationship between the user and the printer and thus fails to
impose any restriction on the height of the paper feeding unit or sheet
feeding area. In particular, the language of claims 3 and 4 is broader than
claim 1 because it omits the limitation that the user is approximately 170 cm
tall (Fact 4). In all other respects, the language of claims 3 and 4 defining
the height of the paper feeding unit is the same as claim 1 and thus fails to
impose any limitation on the height of the paper feeding unit. The language
of claims 16 and 18 is slightly narrower than claim 1 because it requires that
“the sheet feeding area is positioned at the height when the printer is placed
substantially at ground level” (Fact 5). Claims 16 and 18, however, fail to
impose any restriction on where the user is standing (Fact 5). As such,
claims 16 and 18 still fail to impose any restriction on the height of sheet
feeding area. Thus, claims 3, 4, 16, and 18 suffer from the same
indefiniteness problem as claim 1.

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Independent claim 13 cures the problem discussed above in that it
recites that both the user and the printer are “substantially at ground level”
(Fact 6). Claim 13, however, suffers from another problem in that it is
unclear what is meant by a “sheet feeding area,” as explained infra in the
New Grounds of Rejection. Thus, we will sustain the Examiner’s rejection
of claim 13, and claim 17 which depends from claim 13, based on the
reasoning set forth below and will designate our affirmance as a new ground
of rejection.
NEW GROUNDS OF REJECTION
We enter a new ground of rejection of claims 13, 15-18, 26, and 31
under 35 U.S.C. § 112, second paragraph, and a new ground of rejection of
claims 15, 26, and 31 under 35 U.S.C. § 112, first paragraph. The following
additional findings of fact are pertinent to the new grounds of rejection.
ADDITIONAL FINDINGS OF FACT
7. 	The Appellant’s Specification describes the “sheet feeding area”
as follows:
According to the present invention, there is
also provided a large printer comprising: a sheet
feeding area positioned at a height whereat a user
standing in front of the printer is about to set up a
printing medium.
In the printer, a plurality of paper rolls are
loaded in the sheet feeding area so as to be

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arranged obliquely with each other in the vertical
direction.
In the printer, the printing medium includes
at least one roll of paper and at least one sheet of
stiff carton. The sheet feeding area includes an
accommodation space in which the paper roll is
loaded and a cover member for covering the
accommodation space from thereabove and for
supporting the stiff carton from therebelow.
(Spec. 7:6-15.) From this description, we understand the phrase
“sheet feeding area” to refer to two areas on the printer, viz, the
accommodation space in which the paper roll is loaded and the
cover member above the accommodation space on which the stiff
carton and sheets of paper rest for feeding into the printer.
8. 	Claim 15, however, belies this understanding in that it claims a
large printer comprising a sheet feeding area and a cover member.
If the sheet feeding area were meant to include both the
accommodation space into which the paper rolls are loaded and
the cover member on which the sheets of paper and stiff carton are
loaded, as described in the Specification, then the recitation of a
cover member in claim 15 would be redundant to the recitation of
sheet feeding area. We surmise then from claim 15 that the
recitation of sheet feeding area is broader than the embodiment
disclosed in the Appellant’s Specification. Thus, we must
consider the ordinary meaning of the words of the claimed phrase.
9. 	The word “sheet” potentially refers to the sheets of paper being
loaded into the printer, as opposed to other types of paper, i.e., the

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stiff carton or the paper rolls, discussed in the Specification. In
particular, the Specification and the claims describe three types of
paper: (1) paper rolls, (2) sheets of paper, and (3) stiff carton, and
distinguish between the parts of the printer set aside for feeding
paper rolls (i.e., the spindle receptacles 1a and 1b) and the part of
the printer set aside for feeding the sheets of paper and the stiff
carton (i.e., the paper roll cover 28) (Spec. 12:3-22 and Figs. 2 and
3).
10. 	The ordinary meaning of the word “area” includes “a distinct part
or section, as of a building, set aside for a specific function.” The
American Heritage Dictionary of the English Language (4th ed.
2000).
11. 	Thus, using the ordinary meanings of “sheet” and “area,” we
understand the phrase “sheet feeding area” to refer to the part of
the printer set aside for feeding sheets of paper into the printer.
According to the Specification, the part of the printer set aside for
feeding sheets of paper into the printer is the cover member (Facts
8 and 10).
12. 	Claims 15 and 26, however, belie this understanding in that they
claim that the sheet feeding area is “operable to feed” all three
types of paper, and the cover member disclosed in the
Specification is not operable to feed the paper rolls.
13. 	Thus, the claimed “sheet feeding area” is amenable to two possible
definitions. Based on the description provided in the

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Specification, “sheet feeding area” could be interpreted to mean
the accommodation space in which the paper roll is loaded and the
cover member above the accommodation space on which the stiff
carton and sheets of paper rest for feeding into the printer (Fact 7).
Based on the ordinary meaning of the words in the phrase, “sheet
feeding area” could be interpreted to mean the part of the printer
set aside for feeding sheets of paper into the printer, i.e., the cover
member (Facts 9-11). Neither of these definitions makes sense in
view of the remainder of the claims (Facts 8 and 12). Thus,
neither the Specification, nor the claims, nor the ordinary
meanings of the words provides any guidance as to what Appellant
intends to cover with this claim language.
14. 	Claims 15 and 26 recite, “a sheet feeding area operable to feed
….” The remainder of each recitation describes the particular
paper being fed. As such, claims 15 and 26 have defined the
element “sheet feeding area” in terms of the function it is intended
to perform, viz., feeding specific types of paper. The Appellant
has failed, however, to use “means for” in the recitation of these
claim elements.
Rejection under 35 U.S.C. § 112, second paragraph
We enter a new ground of rejection of claims 13, 15-18, 26, and 31
under 35 U.S.C. § 112, second paragraph, because the use of the phrase
“sheet feeding area” renders the claims indefinite. The claimed “sheet

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feeding area” is amenable to two plausible definitions (Fact 13). Based on
the description provided in the Specification, “sheet feeding area” could be
interpreted to mean the accommodation space in which the paper roll is
loaded and the cover member above the accommodation space on which the
stiff carton and sheets of paper rest for feeding into the printer (Fact 7).
Based on the ordinary meaning of the words in the phrase, “sheet feeding
area” could be interpreted to mean the part of the printer set aside for
feeding sheets of paper into the printer, i.e., the cover member (Facts 9-11).
Neither of these definitions makes sense in view of the remainder of the
claims (Facts 8 and 12). Thus, neither the Specification, nor the claims, nor
the ordinary meanings of the words provides any guidance as to what
Appellant intends to cover with this claim language.
Due to the ambiguity as to what is intended by the claimed “sheet
feeding area” and the fact that this claim element is amenable to two or more
plausible claim constructions, we enter a new ground of rejection of claims
13, 15-18, 26 and 31 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter that the Appellant considers to be the invention.
Rejection under 35 U.S.C. § 112, first paragraph (scope of enablement)
We enter a new ground of rejection of claims 15, 26, and 31 under
35 U.S.C. § 112, first paragraph, because the claimed “sheet feeding area
operable to feed …” is a purely functional recitation with no limitation of
structure.

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When a claim uses the term “means” to describe a limitation, a
presumption inheres that the inventor used the term to invoke § 112, ¶ 6.
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1375 (Fed. Cir. 2003). “This
presumption can be rebutted when the claim, in addition to the functional
language, recites structure sufficient to perform the claimed function in its
entirety.” Id.
As the court set forth in LG Electronics:
" '[A] claim term that does not use 'means' will
trigger the rebuttable presumption that § 112 ¶ 6
does not apply.' " Lighting World, Inc. v.
Birchwood Lighting, Inc., 382 F.3d 1354, 1358
(Fed. Cir. 2004) (quoting CCS Fitness, Inc. v.
Brunswick Corp., 288 F.3d 1359, 1369 (Fed. Cir.
2002)). This presumption can be rebutted "by
showing that the claim element recite[s] a function
without reciting sufficient structure for performing
that function." Watts v. XL Sys., 232 F.3d 877, 880
(Fed. Cir. 2000) (citing Rodime PLC v. Seagate
Tech., Inc., 174 F.3d 1294, 1302 (Fed. Cir. 1999)).
However, the presumption "is a strong one that is
not readily overcome." Lighting World, Inc., 382
F.3d at 1358.
LG Electronics, Inc. v. Bizcom Electronics, Inc., 453 F.3d 1364, 1372
(Fed. Cir. 2006).
Because the Appellant did not use “means” to recite the sheet feeding
area in claims 15 and 26 (Fact 14), we presume that the Appellant did not
intend to invoke interpretation of “sheet feeding area” under § 112, sixth
paragraph. In a post-issuance claim construction, a court would then look
for a lack of sufficient structure in the claim element in order to rebut the

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presumption, and if such structure were lacking, construe the claim element
under § 112, sixth paragraph. Although we find that the recitation of a
“sheet feeding area” does not recite sufficient structure to define what is
being claimed by this element 1, we decline to use this fact in the midst of
prosecution of an application to rebut the presumption that § 112, sixth
paragraph does not apply, where the Appellant still has the opportunity to
clearly invoke § 112, sixth paragraph by amending the claims to use “means
for” language if that is indeed his intent. As such, we hold that the “sheet
feeding area operable to feed …” language of claims 15 and 26 does not
require claim interpretation under § 112, sixth paragraph. As such, the claim
element “sheet feeding area operable to feed” is a purely functional
recitation in that there is no structure presented in the claim element itself,
and we are not required to import structure from the Specification into the
claim under 35 U.S.C. § 112, sixth paragraph. Nor is there any evidence that
one of ordinary skill in the art could understand such a term to have a
definite structural meaning. See infra.
35 U.S.C. § 112, sixth paragraph, when enacted, was a statutory
response to the Supreme Court’s decision in Halliburton Oil Well Cementing
Co. v. Walker, 329 U.S. 1 (1946). In Halliburton,2 the Supreme Court held
invalid an apparatus claim on the ground that it used a “means-plus-
1 See supra, new ground of rejection under 35 U.S.C. § 112, second
paragraph.
2 Halliburton was the culmination of a long line of cases dealing with use of
terms such as “means” and “mechanisms” in claims. See, e.g., A.W. Deller,
Walker on Patents, § 166, pp. 790-794 (Deller's Edition 1937).

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function” term which was purely functional. Such a claim was improper
because the means term with a stated function merely described a particular
end result, did not set forth any specific structure, and would encompass any
and all structures for achieving that result, including those which were not
what the applicant had invented.
In Greenberg, the Court of Appeals for the Federal Circuit stated:
As this court has observed, “[t]he record is clear on
why paragraph six was enacted.” In re Donaldson
Co., 16 F.3d 1189, 1194, 29 USPQ2d 1845, 1849
(Fed. Cir. 1994)(in banc). In Halliburton Oil Well
Cementing Co. v. Walker, 329 U.S. 1, 71 USPQ
175 (1946), the Supreme Court held invalid a
claim that was drafted in means-plus-function
fashion. Congress enacted paragraph six, originally
paragraph three, to overrule that holding. In place
of the Halliburton rule, Congress adopted a
compromise solution, one that had support in the
pre-Halliburton case law: Congress permitted the
use of purely functional language in claims, but it
limited the breadth of such claim language by
restricting its scope to the structure disclosed in the
specification and equivalents thereof. See Valmont
Indus., Inc. v. Reinke Mfg. Co., 983 F.2d 1039,
1041-42, 25 USPQ2d 1451, 1453-54 (Fed. Cir.
1993); In re Fuetterer, 319 F.2d 259, 264 n.11,
138 USPQ 217, 222 n.11 (CCPA 1963). (Emphasis
added.)
Greenberg v. Ethicon Endo-Surgery Inc., 91 F.3d 1580, 1582 (Fed. Cir.
1996). As the Federal Circuit explained, the statutory solution represents
only a compromise.

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The so-called “Halliburton rule” proscribed “conveniently functional
language at the exact point of novelty.” Halliburton, 329 U.S. at 8. More
generally, Halliburton proscribed purely functional claiming by prohibiting
a patentee from using “broad functional claims” to “obtain greater coverage
by failing to describe his invention than by describing it as the statute
commands.” Id. at 12-13. Although the Halliburton rule may have looked
for purely functional language only at the exact point of novelty, the broader
concerns expressed by the Court in Halliburton are still valid regardless of
where the purely functional claim element appears in the claim.
In particular, the Court in Halliburton feared the “overhanging threat”
of the functional claim which “barred anyone from using in an oil well any
device heretofore or hereafter invented which combined with the [prior art]
machines performs the function of clearly and distinctly catching and
recording echoes from tubing joints with regularity.” Id. at 12. The Court
explained that “[j]ust how many different devices there are of various kinds
and characters which would serve to emphasize these echoes, we do not
know.” Id. The Court further explained,
In this age of technological development there may
be many other devices beyond our present
information or indeed our imagination which will
perform that function and yet fit these claims. And
unless frightened from the course of
experimentation by broad functional claims like
these, inventive genius may evolve many more
devices to accomplish the same purpose.
Id. (citations omitted).

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26
This general prohibition against the use of “purely functional claim
language” (and the more specific Halliburton rule) has not been completely
eliminated. Rather, “purely functional claim language” is now permissible
but only under the conditions of 35 U.S.C. § 112, sixth paragraph, i.e., if its
scope is limited to the corresponding structure, material, or act disclosed in
the specification and equivalents thereof.
In the absence of such limited construction, the concerns expressed by
the Court in Halliburton are still applicable to prohibit the use of “purely
functional” claim language. Hence, any claim that includes purely
functional claim language, and which is not subject to the limited
construction under 35 U.S.C. § 112, sixth paragraph, fails to meet the
requirements of 35 U.S.C. § 112, first paragraph, according to reasoning in
Halliburton and thus is unpatentable.
While the particular claim language involved in the Supreme Court's
Halliburton decision uses the word “means,” the issue was claiming in a
purely functional manner, a practice condemned by pre-existing case law,
and not any particular problem associated uniquely with the word “means”
as distinguished from other purely functional words and phrases. With
regard to pre-existing case law around the time of the Supreme Court's
Halliburton decision, see In re Fuetterer, 319 F.2d 259, 263 (CCPA 1963),
wherein the Court of Customs and Patent Appeals explained:
In the Fullam case [In re Fullam, 161 F.2d
247 (CCPA 1947)], this court stated that some
claims were properly rejected as “functional in
claiming merely the desired result well known to

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and sought after by workers skilled in the art.”
Claims directed merely to a “desired result” have
long been considered objectionable primarily
because they cover any means which anyone may
ever discover of producing the result. See, e.g.,
O'Reilly v. Morse, 15 How. 62; Heidbrink v.
McKesson, 290 F. 665.
When an applicant has not given notice to the public that his or her
purely functional claim element is to be limited by the application of
35 U.S.C. § 112, sixth paragraph, a first USPTO concern is that the claim is
indefinite under 35 U.S.C. § 112, second paragraph. A second USPTO
concern is that such unlimited purely functional claiming may reasonably be
construed to encompass any and all structures for performing the recited
function, including those which are not what the applicant invented. Thus, it
is doubly critical that the USPTO be in possession of such public notice
when making a determination to grant a patent.
That is, when the limitation encompasses any and all structures or acts
for performing a recited function, including those which were not what the
applicant had invented, the disclosure fails to provide a scope of enablement
commensurate with the scope of the claim and the claim would violate the
prohibition of Halliburton.
We conclude that in claim construction before the USPTO, the
Supreme Court’s Halliburton case remains viable for claims having purely
functional claim language which is unlimited either by (1) the application of
35 U.S.C. § 112, sixth paragraph, or (2) the additional recitation of structure.

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In the present case, claims 15 and 26, which recite “a sheet feeding
area operable to feed …,” violate the rule set forth in Halliburton, because
the claims are not limited by the application of 35 U.S.C. § 112, sixth
paragraph, and they do not contain any additional recitation of structure. As
such, these claims are unpatentable under 35 U.S.C. § 112, first paragraph,
for lack of an enabling disclosure commensurate with the scope of the
claims. Claim 31 depends from claim 26 and further defines the thickness of
the sheet of paper and the stiff carton but fails to add any structure to the
sheet feeding area of claim 26. As such, claim 31 is likewise unpatentable.
PRIOR ART REJECTIONS OF CLAIMS 1-6, 13, 15-18, 26, AND 31
For the reasons expressed in this opinion, claims 1-6, 13, 15-18, 26,
and 31 are indefinite. Therefore, the prior art rejections must fall, pro forma,
because they necessarily are based on speculative assumption as to the
meaning of the claims. See In re Steele, 305 F.2d 859, 862-63 (CCPA
1962). It should be understood, however, that our decision in this regard is
based solely on the indefiniteness of the claimed subject matter and does not
reflect on the adequacy of the prior art evidence applied in support of the
rejections.
CONCLUSIONS OF LAW
We conclude the Appellants have failed to show that the Examiner
erred in rejecting claims 1-6, 13, 16-18 under 35 U.S.C. § 112, second
paragraph; however, in that our reasoning for finding claim 13 indefinite is

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based on grounds different from that relied on by the Examiner, we
designate our affirmance of the rejection of claim 13 under 35 U.S.C. § 112,
second paragraph, as a new ground of rejection. We reverse the Examiner’s
prior art rejections of claims 1-3, 5, 6, 13, 15-18, 26, and 31. We further
conclude that claims 13, 15-18, 26, and 31 are unpatentable under 35 U.S.C.
§ 112, second paragraph and claims 15, 26, and 31 are unpatentable under
35 U.S.C. § 112, first paragraph.
DECISION
The decision of the Examiner to reject claims 1-6, 13, and 16-18 is
affirmed. The decision of the Examiner to reject claims 15, 26, and 31 is
reversed pro forma. We enter a new ground of rejection of claims 13, 15-18,
26, and 31 under 35 U.S.C. § 112, second paragraph and of claims 15, 26,
and 31 under 35 U.S.C. § 112, first paragraph.
FINALITY OF DECISION
Regarding the affirmed rejection(s), 37 C.F.R. § 41.52(a)(1) provides
"Appellant may file a single request for rehearing within two months from
the date of the original decision of the Board."
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2007). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."

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37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellant elects prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Board of Patent Appeals and Interferences for
final action on the affirmed rejection, including any timely request for
rehearing thereof.

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31
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
vsh
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